DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 5, 6, 8-13, 16, 17, and 19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kim et al (US Publication 20230223308).
Regarding claim 1, Kim teaches An electrotechnical arrangement (10) (Fig. 2, 100) comprising
a circuit substrate (3), (Fig. 2, 110)
an electrical component (1, 2), and (Fig. 2, 130)
an insulating element (4), (Fig. 2. 112)
wherein the circuit substrate (3) (Fig. 2, 110) is overmoulded with the insulating element (4) (Fig. 2, 112, para 89-90), the insulating element (4) has a flank (5) which is aligned at an angle with respect to a direction Z defined perpendicularly to a surface of the circuit substrate (3) (Fig. 2, angle of 111 defined by 123), and the component (1, 2) is fixed on the circuit substrate (3) at a foot of the flank (5) of the insulating element (4) (Fig. 2, 130 on 110 at foot of angle defined by 123).
Furthermore, the present claim is drawn to a device, thus the method of overmoulding does not patentably distinguish the claimed invention from that of the invention of ART.
It should be noted that a "product by process claim" is directed to the product per se, no matter how actually made, In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wertheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); and In re Marosi et al., 218 USPQ 289, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in " product by process" claims or not. Note that applicant has the burden of proof in such cases, as the above caselaw makes clear. See also MPEP 2113 [R-1].
Regarding claim 2, Kim teaches the limitations of claim 1 upon which claim 2 depends.
Kim teaches wherein the component (3) comprises a conductor path, which is configured to slide to the foot of the flank (5) along the flank (5) of the insulating element (4) during the course of the production of the electrotechnical arrangement (10) before being fixed (Fig. 2, 130 conductor path 120 including 121-123).
Regarding claim 5, Kim teaches the limitations of claim 1 upon which claim 5 depends.
Kim teaches wherein the insulating element (4) is provided as an electrical insulator in the arrangement (10), between a first surface (3a) of the circuit substrate (3) and a second surface (3b) of the circuit substrate (3) opposite the first surface (Fig. 2, 112 between top and bottom surface of 110).
Regarding claim 6, Kim teaches the limitations of claim 1 upon which claim 6 depends.
Kim teaches wherein the flank (5)
is designed as a demoulding chamfer and/or is a portion of a catching funnel or of a V-shaped groove (Fig. 2, V-shaped groove defined by 123).
Regarding claim 8, Kim teaches the limitations of claim 1 upon which claim x depends.
Kim teaches wherein an additional flank (6) is provided, which forms a funnel with the flank (5) and/or is arranged rotated substantially by 90 degrees about Z with respect to the flank (5) (Fig. 2, flanks defined by 123 on either side of 130 forms funnel).
Regarding claim 9, Kim teaches the limitations of claim 8 upon which claim 9 depends.
Kim teaches wherein,
between the additional flank (6) and the flank (5) [[-]] a floor structure (7) of the insulating element (4) is provided, which covers the surface of the circuit substrate (3) and/or [[-]] a structure of the electrical component (1, 2) is clamped (Fig. 2, 130 clamped into substrate 110 by 111p on sides).
Regarding claim 10, Kim teaches a method for producing an electrotechnical arrangement, comprising:
[[-]] overmoulding (100) a circuit substrate (3) with an insulating element (4) (Fig. 2, substrate 110 including portions 111 and 112, para 78-79),
[[-]] placing (200) an electrical component (1, 2) on the circuit substrate (3) (Fig. 2, 130 on 110), wherein the component (1, 2), during a course of a movement towards the circuit substrate (3) in the direction Z being perpendicular on a surface of the circuit substrate (3), is aligned, due to a flank (5) of the insulating element (4) designed angularly to the direction Z, in a direction X and/or Y with respect to the circuit substrate (3), which direction is oriented perpendicular to the direction Z (Fig. 6 and 7, 130 aligned in 11 by flanks defined by 123 on either side of 130).
Regarding claim 11, Kim teaches the limitations of claim 10 upon which claim 11 depends.
Kim teaches [[-]] mechanical and electrical connection (300) of the component (1, 2) to the circuit substrate (3) (Fig. 6 and 7, 130 electrically and physically attached to 110, para 160-165).
Regarding claim 12, Kim teaches the limitations of claim 10 upon which claim 12 depends.
Kim teaches when the electrotechnical arrangement is used as intended, the insulating element (4) remains therein (Fig. 8, insulating elements 111 and 111p).
Regarding claim 13, Kim teaches the limitations of claim 10 upon which claim 13 depends.
Kim teaches wherein the component (1, 2) comprises a punched part which slides along the flank (5) of the insulating element (4) (Fig. 6 and 7, 130 slides along flanks defined by 123).
Regarding claim 16, Kim teaches the limitations of claim 10 upon which claim 16 depends.
Kim teaches wherein the insulating element (4) is used as an electrical insulator in the arrangement (10) between a first surface (3a) of the circuit substrate (3) and a second surface (3b) opposite to the first surface (3a) of the circuit substrate (3) (Fig. 7, top and bottom surfaces of insulating substrate 110).
Regarding claim 17, Kim teaches the limitations of claim 10 upon which claim 17 depends.
Kim teaches wherein the flank
[[-]] is designed as a demoulding chamfer and/or [[-]] is a portion [[-]] of a catching funnel or [[-]] of a V-shaped groove (Fig. 7, flanks defined by 123 on either side of 130 form a funnel/V-shaped groove in 110).
Regarding claim 19, Kim teaches an electronic control unit comprising an electrotechnical arrangement (10) according to claim 1 (Fig. 2, 130 physically and electrically connected to 110).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 3 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al (US Publication 20230223308).
Regarding claims 3 and 14, Kim lacks specifically disclosing wherein a length of the flank (5) is at least 80 percent of a thickness (H) of the insulating element (4) in Z over the surface of the circuit substrate (3) (noting that in Fig. 2, length of the diagonal where 123 is pointing is not clearly 80% of the width of 112).
MPEP 2144.04 IV A discusses Changes in Size/Proportion In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.). In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application for Kim to include wherein the a length of the flank is at least 80 percent of a thickness of the insulating element in direction Z over the surface of the circuit substrate in order to provide a longer diagonal flank so as to provide more stabilization and alignment of the device, which would increase the functionality of the overall system.
Claims 7 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al (US Publication 20230223308) in view of Jeong et al (US Publication 20230290716).
Regarding claims 7 and 18, Kim teaches the limitations of claims 1 and 10 upon which claim 7 and 18 depend.
Kim does not specifically teach [claims 7 and 18] wherein the flank (5) has an angle with respect to the direction Z of 12 to 40 degrees.
Jeong teaches [claims 7 and 18] wherein the flank (5) has an angle with respect to the direction Z of 12 to 40 degrees (Fig. 23A, second inclination angle S2, para 31-33, 130 degrees minus the 90 degree aspect of z equals 40 degrees).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application for Kim to include the inclination angle as taught by Jeong in order to improve the alignment and seating of the electrical component in the device.
Claims 4 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al (US Publication 20230223308) in view of Soejima et al (US Publication 20210247187).
Regarding claims 4 and 15, Kim teaches the limitations of claims 1 and 10 upon which claims 4 and 15 depend.
Kim does not specifically teach [claims 4 and 15] wherein a thickness (H) of the insulating element (4) over a surface of the circuit substrate (3) in a region of the flank (5) is at least 3 mm.
Soejima teaches [claims 4 and 15] wherein a thickness (H) of the insulating element (4) over a surface of the circuit substrate (3) in a region of the flank (5) is at least 3 mm (Fig. 1, insulation body 35, para 23).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application for Kim to include the flank/sidewall thickness as taught by Soejima in order to improve the auto-alignment properties of the electrical component in the device.
Allowable Subject Matter
Claim 20 is allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 20, the prior art does not teach or render obvious "wherein the circuit substrate (3) is surrounded by the insulation element (4), wherein the insulation element (4) has a flank (5) aligned vertically with respect to the insulation element (3)" and in the combination as claimed.
Response to Arguments
Applicant's arguments filed 30 January 2026 have been fully considered but they are not persuasive.
Applicant argues in regard to claim 1 that Kim does not teach or render obvious “the circuit substrate overmoulded with the insulating element” nor an insulating element having a flank.
As discussed in the rejection above, the process of overmoulding in a limitation directed toward a product or device is not patentably distinguishable. The device of Kim does teach an insulating element having a flank. The insulating element having a flank taught by Kim is defined by 121 and the angle of depression in layer 110B of insulating layer 110.
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Applicant argues in regard to claim 10 that Kim does not teach or render obvious “overmoulding (100) a circuit substrate (3) with an insulating element (4)” nor “wherein the component (1, 2), during a course of a movement towards the circuit substrate (3) in the direction Z being perpendicular on a surface of the circuit substrate (3), is aligned,due to a flank (5) of the insulating element (4) designed angularly to the direction Z, in a direction X and/or Y with respect to the circuit substrate (3), which direction is oriented perpendicular to the direction Z.”
Kim teaches a substrate 110A and insulating layer 110B where 110A is a cured insulating layer that cannot be deformed and has a glass transition temperature (Tg) greater than that of 110B (para 183). The materials for the layers, being different to achieve this difference in Tg, may be glass or plastics as listed in para 80-81 and these materials may be overmoulded. It is seen that these elements are stuck together, broadly one layer being cast onto the other, and would provide the same structure of a circuit substrate overmoulded with the insulating element. If Applicant disagrees, it is recommended applicant provide specific method steps that would differentiate it from the prior art cited (describing molding, formation, how layers are stuck with relation to each other to more clearly define the method steps that go into this process).
Kim teaches “wherein the component (1, 2), during a course of a movement towards the circuit substrate (3) in the direction Z being perpendicular on a surface of the circuit substrate (3), is aligned due to a flank (5) of the insulating element (4) designed angularly to the direction Z, in a direction X and/or Y with respect to the circuit substrate (3), which direction is oriented perpendicular to the direction Z.”
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As illustrated in the figures shown, Kim teaches an electrical component that is heat pressed into a dummy pad 190 and guided into a level depth by the opposing metal layers 121 and 120 a-h and flanks as shown by arrows in Fig. 11.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS HUTSON whose telephone number is (571)270-1750. The examiner can normally be reached Mon-Fri 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeff Natalini can be reached at 571 272 2266. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS LELAND HUTSON/ Examiner, Art Unit 2818
/JEFF W NATALINI/ Supervisory Patent Examiner, Art Unit 2818